Trade Mark and Domain Name Protection
Disputes for most top-level domain names and for many country code level domain names are resolved under the Uniform Dispute Resolution Policy (UDRP) and certain country code systems have individual policies. Domain name applicants agree to submit to the UDRP or relevant policy when they apply for their domain name. For more than twenty years, the UDRP has proved to be a successful, fast and cost-effective alternative dispute resolution system.
The three steps to the UDRP test are:
The disputed domain name is identical or confusingly similar to a trademark or service mark to which the complainant has rights; and >>
The owner of the disputed domain name has no rights or legitimate interests in respect of that domain name;
and >>
The disputed domain name has been registered and is being used in bad faith.
The test is aimed at resolving cybersquatting disputes in which the cybersquatter has both registered and used their domain name in bad faith. The Policy includes provisions that set out when certain types of conduct amount to bad faith, and a body of case law has been built up over the last two decades to help determine what sort of uses qualify as bad faith. The UDRP does not preclude court proceedings and, where it is unlikely to apply because the bad faith criteria are not fulfilled, then a complainant has the option to seek legal remedies.
A prerequisite under the first limb of the UDRP test is that a complainant has trade mark rights, which may be registered or unregistered. It is far easier to qualify by demonstrating that you have a registered trade mark right in any country as a basis for your claim, rather than having to submit substantial evidence of un-registered rights. For this reason, it is important to have a supporting registered trade mark for each domain name.
The UDRP complaint procedure involves filing a complaint with an official service provider and paying a filing fee which varies according to the number of domain names involved and the service provider chosen. Following service, the Respondent has the opportunity to file a response, in default of which a panelist chosen by the administrative service provider proceeds to decide the case. Remedies are limited to the suspension or transfer of the disputed domain name and occasionally, where the complainant had no credible basis for its complaint, can result in a reputational rap over the knuckles in the form of a finding of reverse domain name hijacking. No damages or costs can be awarded. However, more than 90% of cases are decided in favour of the Complainant.
The whole procedure on average takes around 2-3 months from filing a complaint to the publication of a panelist’s decision. Total costs (including official filing fees) start at around €5,000 (plus VAT, if applicable). Costs are higher where a lot of domain names are involved or where the facts and context are complex. Overall, using the UDRP or its equivalent is a fast, efficient and cost-effective way to control cybersquatting.
Having worked with the UDRP system almost since inception, we are ideally placed to represent you, whether you are a Complainant or a Respondent in a domain dispute. After an initial, obligation-free review, we provide you with our opinion of the best strategy to adopt, your likely prospects under the relevant policy and a staged estimate for handling the matter through to a decision.
+353 (0)1 961 8928
Acuatus Limited
Registered Irish Trade Mark Agents & European Trade Mark Attorneys
29 Anglesea St
Dublin 2
D02 Y884
Ireland
trademarks@acuatus.com